Ex Parte Petronelli

Board of Patent Appeals and Interferences

Jul 18, 2012

11182895 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/182,895 07/15/2005 Anthony Paul Petronelli 130332.00332 2728
82744 7590 07/19/2012
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
07/19/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY PAUL PETRONELLI
____________

Appeal 2010-000955
Application 11/182,895
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
BRUCE R. WINSOR, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-15, 17-19, 21, and 22, which are all of the pending claims.
Claims 16 and 20 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
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Application 11/182,895

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We reverse and enter a new rejection pursuant to 37 C.F.R.
§ 41.50(b).
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed Apr. 24, 2009), the Answer (mailed July
23, 2009), and the Reply Brief (filed Sep. 29, 2009).

Appellant’s Invention
Appellant’s invention relates to the providing of service provider
information to a communication device. A determination is made as to a
telecommunications service provider that corresponds to a called party
telephone. Upon a further determination of an indicator that corresponds to
the telecommunications service provider, the indicator is provided to a user
of the communication device. (See generally Spec. ¶ [0003]).

Claim 1 is illustrative of the invention and reads as follows:
1. A method of providing information to a communication device
comprising:
(a) determining a telecommunications service provider corresponding
to a called party telephone number;
(b) determining an indicator of the telecommunications service
provider; and
(c) providing the indicator to the user communication device.

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The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Smith US 5,742,667 Apr. 21, 1998
Kaplan US 5,884,193 Mar. 16, 1999
Cannon US 6,353,664 B1 Mar. 5, 2002
Glenn US 6,954,526 B1 Oct. 11, 2005
(filed Mar. 24, 2000)
Fiedler US 2005/0261003 A1 Nov. 24, 2005
(May 20, 2004)

Claims 1-6, 9-15, 19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Smith in view of Fiedler and Glenn or
Cannon.
Claims 7, 8, 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith in view of Fiedler and Glenn or Cannon and
further in view of Kaplan.

ANALYSIS
Claims 1-6, 9-15, 19, and 21
Appellant contends, with respect to the obviousness rejection of
independent claims 1, 11, and 21, that the applied Fiedler, Glenn, and
Cannon references do not overcome what the Examiner has identified as the
deficiency of Smith. This deficiency is the lack of disclosure of the
determination of a telecommunications service provider that corresponds to
a called party telephone number as claimed.
According to Appellant (App. Br. 5), Fiedler discloses a billing
statement feature which summarizes a user’s calls according to various
parameters, none of which include the claimed service provider information
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that corresponds to a called party telephone number. Appellant further
contends (App. Br. 6) that, although Fiedler’s claim 7 includes the
terminology “service provider,” this terminology is merely used in the
context of providing geographical boundaries such as zip code, phone area
code, city, county, etc. that define a user’s home area for billing purposes.
Appellant also contends (App. Br. 6-7) that Glenn and Cannon are similarly
deficient since, although they both disclose the providing of calling party
information such as phone number and location/area code to a called party,
there is no disclosure of providing service provider information.
We agree with Appellant that none of the applied secondary
references to Fiedler, Glenn, or Cannon teaches or suggests the claimed
feature of determining and providing to a user communication device an
indicator of the service provider of a called party. The Examiner has not
pointed to any specific disclosure of such a feature in any of the references
but, instead, has posited, without evidentiary support, that the references
suggest that any and all information about a telephone call can be provided
(Ans. 13). From this faulty premise, the Examiner concludes that the
particular information provided to user is a matter of “design choice.” Ans.
12.
In a similar vein, the Examiner suggests that, since there is a
correlation between location information such as area codes and service
providers, only the area code associated with a telephone number is
necessary to determine the service provider associated with that number
(Ans. 4). As argued by Appellant, however, there is no evidentiary support
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for the conclusion that there is a corresponding relationship between area
codes and service providers (App. Br. 7).
In view of the above discussion, we find that the Examiner’s line of
reasoning does not rise to a level of a rational underpinning to support a
conclusion of obviousness that relies on the teachings of any or all of
Fiedler, Glenn, and Cannon in the proposed combination with Smith. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418. Accordingly, the Examiner’s
obviousness rejection of claims 1-6, 9-15, 19, and 21 is not sustained.

Claims 7, 8, 17, 18, and 22
We also do not sustain the Examiner’s obviousness rejection of claims
7, 8, 17, 18, and 22 in which the Kaplan reference has been added to Smith,
Fiedler, Glenn, and Cannon to address the call restriction features of the
rejected claims. We find nothing in Kaplan that overcomes the deficiencies
of the Examiner’s reliance on Fiedler, Glenn, and Cannon to support the
obviousness rejection.

REJECTION UNDER 37 C.F.R. § 41.50(b)

We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b). Independent claim 1 is rejected under 35 U.S.C.
§ 102(b) as being anticipated by Smith. Smith discloses an 800 service
telecommunication system in which an indication is provided to a caller that
the 800 service call is a “free” call (Fig. 2, step 204; col. 4, ll. 2-5). In
addition to the “free” call indication to the caller, Smith also discloses that
the indication includes a service carrier identifier, which identifies the carrier
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of the 800 service to the caller (col. 4, ll. 5-8). Appellant’s disclosure
imparts no special definition of the terminology “service provider,” nor
includes any indication that such terminology should be interpreted in any
specific manner that would distinguish over the “service carrier” of Smith.
We note that, although the Smith reference has been applied only
against independent claim 1, this is not to be taken as an indication of the
patentability of the other claims on appeal. In any resumption of the
prosecution of this application before the Examiner, the Examiner should
consider the applicability of the applied prior art as well as the other prior art
of record and any other discovered prior art, to all of the appealed claims 1-
15, 17-19, 21, and 22.

CONCLUSION
In view of the foregoing, we reverse the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims of all of the appealed claims 1-15, 17-19, 21,
and 22. A new rejection of independent claim 1 under 35 U.S.C. § 102(b) is
entered pursuant to 37 C.F.R. § 41.50(b).
Rule 37 C.F.R. § 41.50(b) provides [a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
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or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner....

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record....

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

kis